Raffles Hotel prevails in domain name dispute against Indian hotelier
In a domain dispute before the National Internet Exchange of India, the company that administers the '.in' Domain Name Dispute Resolution Policy (which is modelled on the Uniform Domain Name Dispute Resolution Policy), international hotel chain Raffles has obtained the transfer of the domain name 'www.theraffles.co.in' from Mr Mahavir Kushawaha, an Indian hotelier based in Kota, Rajasthan.
Kushawaha ran a hotel under the name ‘The Raffles’ and had set up a website at 'www.theraffles.co.in'. The hotel was listed on many travel portals, including 'www.tripadvisor.in', 'www.makemytrip.com', 'www.holidayiq.com', 'www.booking.com', 'www.trivago.com', 'www.travelguru.com', 'www.cleartrip.com', 'www.yatra.com' and 'www.goibibo.com'.
In its complaint, Raffles International Limited submitted as follows:
- Raffles is one of the largest luxury management companies in the world, with over 104 hotels in operation worldwide under the RAFFLES, FAIRMONT and SWISSOTEL trademarks.
- Raffles’ RAFFLES mark/name is used across the globe, with 11 hotels and resort properties in existence and five properties under development.
- Raffles’ flagship property, the Raffles Hotel Singapore, was established in 1887; since then, it has become well known, not only in Singapore, but also internationally.
- The brand Raffles is a premier hospitality brand synonymous with excellence in the hospitality business. Raffles and its affiliates have invested much time, effort and monies in the promotion and marketing of the RAFFLES trademark worldwide; this includes Raffles’ corporate website at 'www.raffles.com', which is available and accessible to the public all over the world.
- Raffles and its affiliates are the owners and inventors of the distinctive trademark RAFFLES, and the right to any variations thereof are vested in Raffles only.
- Raffles’ RAFFLES mark is statutorily protected in several jurisdictions around the world, and documents filed by Raffles evidenced the huge amounts expended on advertisements in promoting the Raffles name.
- The respondent had registered the domain name 'www.theraffles.co.in' with the '.in' registry on November 19 2012. This domain name incorporates Raffles' well-known, earlier trademark RAFFLES and the earlier registered domain name 'www.raffles.com'.
- The respondent operated a hotel under an identical name, The Raffles, in Kota, Rajasthan; the adoption of an identical name in an identical industry (ie, the hotel business) was clearly in bad faith.
- The respondent’s website at 'www.theraffles.co.in' misled the general public into thinking that the respondent’s business was in some way associated with Raffles, or was approved, owned or licensed by Raffles.
The respondent filed a detailed response in support of his case:
- The respondent has been actively involved in the business of managing and running his hotel in India under the name of 'The Raffles' since 2012.
- The respondent’s business is well established and has earned immense goodwill and reputation in the relevant trade circles and among the general public. The respondent is the prior user of the mark/name RAFFLES in India.
- The hotel business of the respondent is registered with all the relevant government authorities and has obtained all necessary approvals/licences to operate the said business.
- The adoption of the name 'The Raffles' by the respondent was in good faith, and the word 'Raffle' has a dictionary meaning (ie, a gambling competition in which people obtain numbered tickets, each ticket having the chance of winning a prize).
- The respondent has spent a considerable amount of money on the advertisement and promotion of his hotel under the name 'The Raffles'.
- The registration of a ‘.in’ domain name clearly showed that the business was located in India and was operating only in India, where Raffles had no presence.
- The respondent was the prior adopter/user of the mark RAFFLES in India and had been using the same continuously and uninterruptedly since 2012, while Raffles had no presence whatsoever in India; neither did it have any goodwill or reputation with regard to the mark RAFFLES in India.
Both side filed a voluminous amount of documents in support of their case. After considering the contentions of both parties, the arbitrator/panellist ordered that the domain name be transferred to Raffles based on the following reasons:
- The domain name 'www.theraffles.co.in' was registered by the respondent on November 19 2012, while Raffles had been using its domain name prior to 2012.
- Raffles has been operating a property under the name Raffles Hotel in Singapore since 1887; hence, Raffles was the prior user of the name.
- Raffles had registered the domain name 'www.raffles.com' on December 6 1995 - ie, 17 years prior to the respondent’s registration of the domain 'www.theraffles.co.in'. Raffles had also filed sufficient evidence to show its prior adoption and use of the RAFFLES mark/name.
- The respondent's statutory registrations with various government, civic or tax bodies would not help his case, as none of these bodies have any powers with regard to the registry.
The decision highlights that reputation is no longer localised, and that copying a well-known brand in a domain name without any valid justification will be considered as bad-faith adoption.
Mohandas Konnanath, RNA Intellectual Property Attorneys, Gurgaon
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